Oracle and Google return to the Federal Circuit Thursday to once again argue whether Google's copying of 11,000 lines of code was fair use. Here’s why Oracle probably can’t win.

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Welcome to Skilled in the Art. I’m Scott Graham, Law.com’s lead reporter on intellectual property. Last week this newsletter broke down the Oil States arguments 48 hours after they happened. This week we’re going to predict Oracle v. Google 48 hours ahead! Plus an update on sovereign immunity at the PTAB and Unified Patents’ latest scheme for blowing up marginal patents.

Oracle Asks Federal Circuit to Assume Jury’s Role—Again

Thursday is Pearl Harbor Day, so what more appropriate occasion for Oracle and Google to renew hostilities over the Java API copyright? The tech giants will return to the Federal Circuit to once again argue whether Google’s copying of 11,000 lines of code was fair use, as a San Francisco jury found last year. Orrick’s Josh Rosenkranz is back for Oracle, while King & Spalding partner Daryl Joseffer takes over for Google from Keker, Van Nest & Peters.

What’s that, you say? The last appeal was about copyrightability, not fair use? Go back and listen to the argument. Nearly half of was about fair use and whether that issue had to be resubmitted to a jury—which had hung on it in the first trial—before the appellate court could decide it.

Which is why I make the following prediction: The Federal Circuit judges will huff and puff and say there’s no way on earth they personally would consider Google’s copying a fair use. And then they’ll affirm the jury verdict of fair use.

Here’s my thinking: The court has scheduled the hearing for the unusual time of 3 p.m. That suggests that at least two and maybe all three of the same judges who presided over the first appeal—Kathleen O’Malley, Richard Taranto and S. Jay Plager—will return. On the surface that’s good for Oracle, since they ruled for Oracle on copyrightability and said Oracle’s argument on fair use was “not without force.”

But that panel has already passed up the opportunity to rule as a matter of law. As O’Malley said at the first argument, “There was a lot of conflicting testimony about effect on the market, there was a lot of conflicting testimony about the amount of the use in connection with the overall structure of java as a whole. So why shouldn’t we allow the jury to assess those questions?”

And in her opinion for the court, she wrote, “On balance, we find that due respect for the limit of our appellate function requires that we remand the fair use question for a new trial.”

Well, now the jury has spoken. And Oracle isn’t challenging the jury instructions (though it does complain that Judge William Alsup excluded critical trial evidence). Oracle’s bottom line from its opening brief is, “No reasonable jury with a proper understanding of the law could have excused Google’s copying as a fair use based on the evidence presented at the second trial.”

Good luck with that. Last year the Federal Circuit pilloried three of its members for reversing a patent verdict on the “no reasonable jury” theory. O’Malley was among those voting to “affirm our understanding of the appellate function … as requiring appropriate deference be applied to the review of fact findings.”

Oracle’s best shot may beits alternate argument: Google claimed at both trials that it transformed the Java APIs by using them in a mobile environment. But once Oracle rested in the second trial, Google announced that it was launching Android for PCs. “If a trial is to have any integrity, parties cannot exploit the exclusion of evidence by building a defense around a proposition known to be false,” Rosenkranz writes.

That issue is at least new to this appeal. The Federal Circuit could in theory say, “If we’d known about that the first time, there’d have been no need for a second trial.”

Do you enjoy reading Skilled in the Art?Click here to check out more brand-new briefings from my colleagues at Law.com

For instance, did you know that there is a Native American Intellectual Property Enterprise Council? The organization’s brief, filed by Robbins Geller Rudman & Dowd, explains that it was founded in 2009 and has provided, for example, technology transfer consulting advice to tribes on patented agricultural inventions. The brief states that Native American innovation has run the gamut from the game of lacrosse to potato chips to root beer.

Also backing the tribes: Harvard law professor Laurence Tribe, UC-Berkeley Law dean Erwin Chemerinsky and four other constitutional law scholars. Like the tribes themselves, they point to this money quote from Supreme Court Justice Elena Kagan: “It is fundamentally Congress’s job, not ours, to determine whether or how to limit tribal immunity.” That’s from her 5-4 opinion in Michigan v. Bay Mills Indian Community upholding tribal sovereignty even for off-reservation, commercial activities. Derek Lilliland of Nix Patterson & Roach filed the brief on the scholars’ behalf.

The Business Software Alliance, Askeladden LLC, and the High Tech Inventors Alliance (Oracle, Google, Cisco, Intel, Dell, Salesforce and Adobe Systems) have taken the other side. Some of them, while ostensibly aiming at Native American sovereignty, appear to have their sights on bigger game: state universities, which also have invoked sovereign immunity in PTAB proceedings.

“Everyone who applies for a patent knows that the Patent Office may (and sometimes does) later reconsider its decision to grant that privilege,” state the High Tech Inventors, who are teaming up with the Computer & Communications Industry Association on the brief. They’re represented by John Thorne of Kellogg, Hansen, Todd, Figel & Frederick and Joshua Landau of the CCIA.

Bartko Brings on Four Patent Litigators

San Francisco-based Bartko, Zankel, Bunzel & Miller has beefed up its IP practice. The 44-lawyer litigation shop has added four experienced patent litigators from IP boutique Bunsow DeMory: Brian Smith, Alden Lee, Jeffrey Chen and Joseph Fraresso. Fraresso joins as special counsel; the other three as partners.

The Bartko firm is perhaps best known for business and real estate litigation. It has a footprint in IP, and believes these four lawyers add significantly to it. “Each has deep expertise in patent litigation and analysis,” said Ben Riley, chair of the firm’s litigation department. “Together they provide a perfect complement to our existing team of IP and patent lawyers.”

Unified Patents to Crowdsource Prior Art

Hockey fans of a certain age will remember the scene in Slapshot where Paul Newman announces a bounty on an opposing player. That’s what came to mind when I heard that Unified Patents is offering up rewards for prior art that can help undermine non-practicing entity patents.

Unified COO Shawn Ambwani says the organization has allocated $1 million in prize money for a series of contests it’s calling Patroll. The program is currently offering $2,000 to $5,000 for prior art on eight patents, including three owned by Dominion Harbor.

Crowdsourcing prior art isn’t a new idea, Ambwani admits. Internet security company CloudFlare recently offered $100,000 for help taking down Blackbird Technologies patents. With Patroll, Unified is scaling up the idea and extending it to a wide range of NPEs that target its members with patent suits.

Ambwani says Unified has worked with professional prior art search companies that do a good job in their fields. He’s hoping that crowdsourcing might turn up old user manuals or periodicals that never got indexed on the internet.

“We’re trying to find those nuggets, that extra treasure,” Ambwani says. “Donald Rumsfeld said you don’t know what you don’t know. Prior art is the perfect example of that.”

Finding it and publishing it to Unified’s members, or to the public on its website, might be enough to deter “ankle-biter” NPEs seeking a quick buck from demand letters, Ambwani says. If the prior art ends up being used in a Unified IPR, that might lead to a bonus payment.

In the Hall of the Patent King

Say what you will about Intellectual Ventures, it’s no ankle biter. U.S. District Judge Paul Grimm of Maryland this week analogized them to Dovregubben, the “troll king” of Henrik Ibsen’s Peer Gynt.

Grimm has been presiding over Capital One’s antitrust claims against IV for the last few years. On Monday he drew a roadmap for bringing such a case. Unfortunately for Capital One, the route dead-ends at the Noerr-Pennington doctrine.

In short, Grimm ruled that Capital One created a triable issue as to whether IV’s 3,500-patent portfolio defines a relevant market for antitrust purposes. But the judge also held that IV has a constitutional right to bring patent cases against the financial industry. While it hasn’t won any of them in court, Capital One could not show that the litigation is a “sham” under Noerr-Pennington.

The ruling is a big win for Feinberg Day Alberti & Thompson; Freitas Angell & Weinberg and Funk & Bolton, who represented IV.

Read more details in my story here. Even more details from Michael McCabe, who served as local counsel to IV for a time, in this blog post.

That’s all for now. I’ll be back Friday with thoughts from the actual Oracle v. Google arguments. In the meantime, I’m going to go through my trove of dog-eared appliance manuals and see if they contain any buried treasure …

Scott Graham

Scott Graham focuses on intellectual property and the U.S. Court of Appeals for the Federal Circuit. He writes ALM's Skilled in the Art IP briefing. Contact him at sgraham@alm.com.

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